Ex Parte Safko et alDownload PDFPatent Trial and Appeal BoardJan 18, 201311705592 (P.T.A.B. Jan. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/705,592 02/13/2007 Paula Safko RC281014 3732 21589 7590 01/22/2013 THE COCA-COLA COMPANY PATENT & TECHNOLOGY DEPT--NAT 19 P. O. BOX 1734 ATLANTA, GA 30301 EXAMINER GEORGE, PATRICIA ANN ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 01/22/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte PAULA SAFKO and SHANNON BALESTRINI ______________ Appeal 2011-013134 Application 11/705,592 Technology Center 1700 _______________ Before CHARLES F. WARREN, TERRY J. OWENS, and GEORGE C. BEST, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board from the final rejection of claims 1-29. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2010). We reverse the decision of the Primary Examiner. According to Appellants, the claimed invention is directed to a beverage composition having a pH of from about 1.5 to about 4.5 and containing a preservative system that includes a polylysine and at least one weak acid selected from cinnamic acid, benzoic acid, sorbic acid and alkali metal salts thereof. Spec. 6 (¶ 013). Appellants disclose that while the Appeal 2011-013134 Application 11/705,592 2 ingredients of the disclosed preservative system are known, including that polylysine has antimicrobial properties, the combination of ingredients in certain amounts maintains microbial stability without affecting the flavor of the beverage. Spec., e.g., 3-4 (¶¶ 006-008), 9-10 (¶¶ 029-032). Claim 1 illustrates Appellants’ invention of a beverage composition comprising a preservative system and is representative of the claims on appeal: 1. A beverage composition comprising: a preservative system comprising from about 0.1 ppm to about 150 ppm of polylysine and from about 10 ppm to about 1000 ppm of at least one weak acid chosen from cinnamic acid, benzoic acid, sorbic acid, alkali metal salts thereof, and mixtures thereof; and at least one beverage component, wherein the beverage composition has a pH ranging from about 1.5 to about 4.5. Appellants request review of the ground of rejection under 35 U.S.C. § 103(a) advanced on appeal by the Examiner: claims 1-13, 16, 19, 20 and 22-29 over Blyth (US 6,761,919 B2) and Yasuo (JP 07-289163 A);1 claims 14, 15 and 21 over Blyth, Yasuo and Cirigliano (US 6,036,986); claims 17 and 18 over Blyth, Yasuo and Schuppner (US 3,413,125); and claims 3-5 over Blyth, Yasuo and Yamada (US 2001/0033884 A1). App. Br. 9; Ans. 5, 11, 12, 13. OPINION We agree with Appellants that the Examiner erred in determining that one of ordinary skill in the art would have combined Blyth and Yasuo, common to all grounds of rejection, and thence would have been led to 1 We refer to the translation of Yasuo of record, which is not contested by Appellants. Appeal 2011-013134 Application 11/705,592 3 modify Blyth’s beverage composition, which can contain, among other things, fruit juice and an antimicrobial preservative system that includes cinnamic acid, sorbic acid or benzoic acid and at least one essential oil that exhibits a fungicidal activity, by using polylysine disclosed by Yasuo as a polyphenol oxidase activity inhibition agent which, along with an edible film coating, prevents discoloration of solid cut fruit or vegetable, thus arriving at a beverage composition encompassed by representative claim 1. Blyth abstract, col.2 ll.13-19, col.2 ll.28-30, col.4 ll.55-57, col.6 l.1 to col.7 l.33; Yasuo ¶¶ 0001, 0006-0017. Ans. 5-8, 14-16; App. Br. 11-14, 17-20; Reply Br. 3-5. The Examiner submits that one of ordinary skill in the art would have used Yasuo’s polylysine in Blyth’s fruit juice, which “inherently comprises fruit which has been cut or peeled, because fruit juices comprise particulates (minute cut or peeled pieces) of fruit,” because Yasuo would have provided a reasonable expectation that polylysine would successfully act as an antioxidant which prevents discoloration of and preserves fruit as a food product. Ans. 7-8, 15, 16. Appellants submit that Yasuo’s disclosed preservation system for solid cut fruit and vegetables, in which a solution containing the polyphenol oxidase activity inhibition agent and edible film coating agent is applied to solid cut fruit, would not have suggested to one of ordinary skill in the art that a polyphenol oxidase activity inhibition agent, including polylysine, should be added to a fruit juice. App. Br. 12-13, 17-18, citing Yasuo ¶ 0017; Reply Br. 4-5. On this record, we are of the opinion that, as Appellants point out, the Examiner has not supplied and developed a sustainable rationale establishing that one of ordinary skill in the art would have been prompted by Yasuo to Appeal 2011-013134 Application 11/705,592 4 modify Blyth’s fruit juice with polylysine so as to arrive at the claimed beverage composition encompassed by claim 1. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at appellant’s claimed invention has not been explained); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.” (citation omitted)); see also, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Accordingly, in the absence of a prima facie case of obviousness, we reverse the grounds of rejection of claims 1-29 under 35 U.S.C. § 103(a). The Primary Examiner’s decision is reversed. REVERSED tc Copy with citationCopy as parenthetical citation